Remedies for intellectual property right infringement

In general, an intellectual property infringement is the breach of any IPR. IPRs are legal rights of ownership that people can hold in IP.

IPRs are infringed when a work protected by intellectual property laws is used, copied or otherwise exploited without the consent of the owner of those rights.

Examples of IPR infringement include counterfeiting (ie imitating genuine goods, often at a lower quality) and piracy (ie the unauthorised copying, use, reproduction and/or distribution of materials protected by IPRs).

When an IP infringement occurs, the owner of the relevant IPR can take legal action or otherwise rely on their IPRs to stop the infringement and resolve the issue. 

Methods of resolving an infringement dispute include: 

Sending cease and desist letters

If someone uses your intellectual property without permission, you can send them an intellectual property Cease and desist letter. This is a formal letter informing the person using your intellectual property that they are using your IPRs without permission and asking them to stop this behaviour and refrain from it in future.

Sending a cease and desist letter is usually the first step in dealing with unauthorised use of your IP. The letter is often enough to prompt the recipient to stop their infringing conduct. As such, using a cease and desist letter may help avoid unnecessary legal costs and delays associated with bringing formal proceedings for IP infringement.

For more information, read Cease and desist letters for IP infringement.

Coming to an agreement

Rather than going to court over an IPR infringement, consider coming to an agreement with the infringing party.

You can, for example, consider licensing your intellectual property to them (ie allowing the infringing party to use your IP in return for a fee). A Licence agreement enables an IPR owner to authorise another party to exercise some of the owner's rights in the IP while the owner retains ownership and control of it. For more information, read Intellectual property licensing.

You may also consider mortgaging, selling or marketing your intellectual property, or entering into a coexistence agreement (ie when both parties agree to trade in the same or similar market using identical or similar trade marks).

For more information on these various aspects of agreements, read Reaching an agreement - intellectual property infringement.

Undertaking mediation

If you cannot come to an agreement with the infringing party, you can consider using mediation.

Mediation is a form of alternative dispute resolution (ADR) which involves an independent trained mediator facilitating communication between the parties having the dispute, with the aim of helping them to achieve a settlement or resolution.  For more information, read Mediation.

Mediation can be used for most intellectual property disputes, including infringements on trade marks, patents, copyright, and design infringement.

The Intellectual Property Office (IPO) has its own mediation service which you can consider using.

Bringing a claim via the courts or the IPO

If you wish to bring a claim for intellectual property infringement, you can do so through the courts of the IPO. Some proceedings can only be brought through the IPO, while others can only be brought through the courts. For example, a claim for copyright infringement can only be brought through the courts.

The courts will expect you to have tried to resolve the dispute out of court before bringing a claim. For example, via mediation.

For more information on bringing a claim for intellectual property infringement, see the government’s guidance on defending your intellectual property.

The courts may award a variety of different remedies following a successful claim for intellectual property infringement. Which remedies are available depend on the type of IPR that was infringed and the specifics of the situation. Remedies that may be used include: 

Injunctions

An injunction is a common remedy for various types ofIPR infringement. Injunctions are court orders that require named individuals to refrain from doing certain specified acts (eg using the IPR owner’s intellectual property).

Injunctions can take the form of interim injunctions or final (or ‘perpetual’) injunctions. Interim injunctions are emergency measures granted prior to commencement of or during proceedings to prevent a party from carrying out infringing acts while the case is being decided. Final injunctions are typically granted as a final relief by the court, prohibiting the unauthorised use of the IPR on an ongoing basis.

Failure to adhere to an injunction can result in fines and even imprisonment.

Damages or account of profits

Where a profit has been made as a result of the IPR infringement, the IPR owner may be entitled to compensation. The courts can award such compensation in the form of damages or an account of profits. Note that the IPR owner is often given the choice between either remedy, but they can only choose one.

An account of profits covers the profits that the infringing party has made as a result of their infringement, whereas damages usually approximate the value of the damage done to the IPR owner.

Where an account of profits is awarded to the IPR owner, a calculation is carried out as to the amount of profit the infringing party has amassed because of the infringement.

An award of damages aims to compensate the IPR owner for the losses they have suffered as a result of the infringement. A sum awarded as damages aims to put the IPR owner back in the position they would have been in had the infringement not happened (insofar as practicable).

Award of costs

An award of costs is a court order stating that one party has to pay to another party the costs incurred in bringing legal proceedings. An award of costs can either be for the full amount or for a proportion of the costs incurred.

Delivery and/or destruction of infringing items

While there is no automatic entitlement to the delivery of or destruction of infringing items (or materials) and items used to make such infringing items, the courts may choose to make such an order when infringement is shown. This relief is typically granted by the courts in addition to an injunction.

Where an order for the delivery of such items is made, this means that the infringing party needs to deliver to the IPR owner all infringing items and, where deemed necessary, the items used to make the infringing items.

Where an order for the destruction of such items is made, this means that the infringing party needs to destroy all infringing items and, where deemed necessary, the items used to make the infringing items. 

These steps ensure that the infringing party cannot continue to use the infringing items.

Tracing orders

The courts may also make tracing orders, which are court orders requiring the infringing party to provide information on where they acquired the infringing items. This is generally used where the infringing party did not create the infringing items themselves. 

Failure to comply with a tracing order can amount to contempt of court, which can result in fines and/or up-to 2 years imprisonment.